DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The Examiner directs the Applicant’s attention to the Office’s decision dated 9/23/2025 regarding the petition filed by the Applicant on 5/09/2025 requesting the restoration of the right of foreign priority to the Eurasian Patent Application No. 202090626, filed on 2/16/2020. The Office has dismissed the petition for reasons expressed in said decision and, therefore, the requested foreign priority is not recognized.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 & 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panda et al. (WIPO Publication # WO/2023/087095).
Regarding Claim 1, Panda discloses a biodegradable composite material (i.e. biodegradable polymer-based composites used as a substrate for printed circuit boards (PCB)) for the manufacture of a dielectric substrate for printed circuit boards, made by thermal pressing (i.e. compression molding with a hot press) of fiberglass layers (i.e. fibrous reinforcement material) pre- impregnated with a polymer binder solution (i.e. compression molding the blended material with a fibrous reinforcement material to form the composite), which is used as L-polylactic acid; or D-polylactic acid; or mixtures of L- and D-polylactic acids; or polyglycolic acid (i.e. aliphatic polyester such as polylactic acid ) (Abstract; Paragraph 001-004, 006-011, 030-040, 042, 054-062, 066).
Regarding Claim 2, Panda discloses a biodegradable composite material (i.e. biodegradable polymer-based composites used as a substrate for printed circuit boards (PCB)) for the manufacture of a dielectric substrate for printed circuit boards , made by thermal pressing of glass fiber layers (i.e. fibrous reinforcement material) and a polymer binder, which is used as L-polylactic acid; or D-polylactic acid; or mixtures of L- and D-polylactic acids; or polyglycolic acid (i.e. aliphatic polyester such as polylactic acid), laid alternately in the form of a polymer film and a fiberglass cloth (i.e. formed by sandwiching one or more layers of the woven reinforcement material between two layers of granulated blend) (Abstract; Paragraph 001-004, 006-011, 030-040, 042, 054-062, 066).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Panda et al. (WIPO Publication # WO/2023/087095) in view of Rinne (US Patent Application Publication # 2022/0322592).
Regarding Claim 3, Panda discloses recycling of biodegradable composite material and PCB based on it by separation into initial components, such as polymer binder, glass fiber, electronic components, and conductive paths (Abstract; Paragraph 001-004, 006).
Panda does not explicitly disclose that the recycling is performed by extraction methods such as convection, ultrasonic, microwave, sub- and supercritical extraction, as well as electric pulse extraction with solvents organic, inorganic, sub- and supercritical fluids, ionic liquids, individual chemicals.
Rinne teaches recycling of a PCB performed by extraction methods such as convection (i.e. an infra-red heater or a heating element), ultrasonic (i.e. ultrasound cutting tool), microwave (i.e. microwave induced plasma decapsulating systems), sub- and supercritical extraction, as well as electric pulse extraction with solvents organic, inorganic, sub- and supercritical fluids, ionic liquids (i.e. electrolytic liquid), individual chemicals (i.e. electrochemical removal tool or electrochemical machining such as Jet-ECM) (Fig. 2-5; Abstract; 0003-0020, 0033, 0040-0043, 0047, 0078, 0082, 0103, 0218-0222).
Rinne teaches that it is well known in the art of recycling PCBs to use extraction methods such as convection, ultrasonic, microwave extraction, as well as electric pulse extraction with ionic liquids. Although Panda is silent on the specific methods of recycling the biodegradable PCBs disclosed, but states that the biodegradable PCBs disclosed are meant to be adequately recycled by separating the components from the board material and then recovering metals and non-metals from the board. It would have been obvious to one skilled in the art to use extraction methods to recycle the PCBs of Panda, as taught by Rinne, in order to adequately and efficiently separate the components to facilitate recycling.
Response to Arguments
Applicant's arguments filed 4/02/2025 have been fully considered but they are not persuasive. As discussed above, the present application is not entitled to the benefit of foreign priority to the Eurasian Patent Application No. 202090626, filed on 2/16/2020. The Office has dismissed the petition for reasons expressed in said decision and, therefore, the requested foreign priority is not recognized. Therefore, the Applicant’s arguments regarding and depending on the foreign priority date are moot.
The Applicant further argues that primary reference Panda does not disclose all the elements of the claimed invention such as the ability to apply copper or aluminum conductors onto the proposed biodegradable composite, the feasibility of manufacturing functional printed circuit boards (PCBs) from its material, or that its material can achieve electrical and mechanical characteristics comparable to standard industrial PCBs. The Examiner respectfully disagrees. First, none of the aforementioned elements are actually in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, Panda explicitly states throughout the disclosure that the biodegradable polymeric material is used to make biodegradable polymer-based composites that are meant to be used as a substrate for printed circuit boards. In order for such a composite to be used as a substrate for printed circuit boards, it must be able to have conductors applied onto it. Therefore, such a feature is inherent to it being used as a printed circuit board. This further applies to the feasibility of manufacturing functional printed circuit boards (PCBs) from said material and that said material can achieve electrical and mechanical characteristics comparable to standard industrial PCBs. Panda’s explicit mention that the composite material is to be used to make substrates for PCBs necessarily means that manufacturing functional printed circuit boards from said material is feasible and that said material can achieve electrical and mechanical characteristics comparable to standard industrial PCBs.
The Applicant’s arguments against the secondary reference Rinne used to show the obviousness of claim 3 under 35 U.S.C. 103 also rely features that are not described by the claim. Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). For all the reason above, the rejection of the claims is still valid.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RHADAMES J ALONZO MILLER whose telephone number is (571)270-7829. The examiner can normally be reached Mon-Fri 10am-6pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Thompson can be reached on (571) 272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RJA/ Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/ Supervisory Patent Examiner, Art Unit 2847